On the entering into force of the European Patent Convention 2000 (“EPC 2000”) on 13 December 2007, the part of Article 138 of EPC 1973 dealing with amendments of patents was amended. One consequence of the amendment was that English law changed. The Patents Act 1977, as amended by the Patents Act 2004, required that in determining whether to allow an application to amend a patent regard is to be given to the relevant principles under the European Patent Convention. These are the same principles which have been applied by the European Patent Office in determining amendments during opposition proceedings.
In English law prior to the amendments made to the EPC, an English court exercised a discretion as to whether to permit an amendment, taking into consideration matters including the patentee’s behaviour, for example whether the patentee had acted in good faith at all times and whether there had been undue delay in proposing the amendment. By contrast, the EPO never applied such discretion when considering amendments during opposition proceedings, merely considering whether the amendment applies with patent law: that there is no added matter or broadening of the scope of the claims. Another change brought about by the EPC 2000 is the ability for the patentee to apply centrally to the EPO after grant for an amendment, where the same test is applied.
The effect of the EPC 2000 in the UK is to remove the discretion which the English Courts previously applied when considering amendments. A recent Court of Appeal decision clarifies what this means and explains what discretion the Court can still exercise.
Prior to the coming into force of EPC 2000 the English Court of Appeal in Nikken v Pioneer Trading  considered whether to allow an application by patentee to amend its patent following it finding the patent to be invalid. In doing so the Court identified three situations where an amendment might be sought:
|(b)||after trial, at which certain claims have been held valid but others invalid; and|
|(c)||after trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments.|
With regard to situation (c) the Court considered that such an application should not normally be allowed. Its principal reasoning was that to do so would allow the patentee to bring a second set of proceedings in respect of matter the patentee could have brought in the first set of proceedings.
The question before the Court of Appeal in Nokia v IPCom, decided in January 2011, was to what extent the Nikken principles still applied following the coming into force in the UK of the EPC 2000.
The Court of Appeal confirmed that the principles of Nikken still applied to post-trial amendments. This case was part of a long running on-going dispute between Nokia and IPCom, where IPCom is seeking a licence from Nokia of its allegedly GSM/UMTS standard essential patents. It concerned two patents, both of which were found to be invalid by the High Court. On appealing the findings of invalidity, IPCom also appealed two applications it had made to amend one of the patents. The first application was made shortly prior to the hearing of the High Court trial and the second was made a month or so after the handing down of the High Court’s judgment. The first instance Judge, Mr Justice Floyd, had refused both applications on the basis that to permit the late amendments.
The Court of Appeal considered and rejected IPCom’s appeals to allow its applications. It found that Floyd J was correct to refuse IPCom’s first application to amend, made only 3 days before trial, on the basis that to proceed with it would have been procedurally unfair, particularly in the light of it being a very extensive amendment.
With regard to the second application the Court of Appeal considered and applied its earlier decision in Nikken. In doing so it rejected IPCom’s arguments that the principles laid down in Nikken should be relaxed. It argued that Nikken, if read strictly, would be inconsistent with an earlier House of Lords decision Johnson v Gore Wood , which concerned whether raising an issue in new proceedings where it could have been considered in earlier proceedings was abusive. The Court of Appeal, though agreeing that there might be exceptions where allowing a successive case on such an issue may be fair, it did not agree that on the facts of this case there was anything exceptional. It noted that IPCom had every opportunity of proposing amendments in time for there to be a trial on them, but it failed to do so.
Regarding Art 138 EPC, IPCom argued that this provision had liberalised the circumstances in which an amendment may be permitted and created a right for a patentee to amend the claim any way it wished (rather than merely removing invalid claims) unless the patentee’s conduct was really culpable or the amendment would cause unjust oppression. The Court did not accept this. Lord Justice Jacob stated:
“The main purpose of Art. 138 as compared with the unamended Art. 138 was to provide that national authorities should have an amendment procedure at all. For prior to the amendment of the Treaty the laws of some countries did not allow patent amendment post-grant at all. Now they must. Art. 138 was not intended to govern national rules of procedure concerning patent amendment, still less to require national courts to conduct them in a manner which national law regarded as an abuse of process."
Lord Justice Jacob went on:
“moreover, the Article does not apply to a case where the grounds of revocation affect the European patent as a whole, as the Judge held here. The provision is only about a case where the grounds of revocation affect the patent in part. And finally it is impossible to suppose that this Article was intended to override national procedural fairness”.
The Court also considered and rejected arguments raised by IPCom regarding the Enforcement Directive and in doing so considered how the EPO and other countries dealt with amendments noting “no other courts in Europe, or indeed the EPO, allow a patentee who has had his patent found invalid, only then in the same court to propose a limitation to it”.
In conclusion, patentees seeking to amend their patent in English proceedings should consider and apply for these amendments at an early stage. The later such amendments are applied for the more likely the application will be considered an abuse of process and refused by the courts.